The United States, like countries such as Australia and Canada, follows a first-to-use trademark system. This means that in the U.S., trademark rights are acquired through actual use in commerce, rather than simply by registration. In principle, the first person to use a mark commercially has superior rights over others who later adopt the same or a similar mark for related goods or services.
However, the U.S. system introduces a unique twist—constructive use—which allows applicants to claim priority rights based on their filing date, even before they have begun using the mark in commerce. This concept, while rooted in a first-to-use system, introduces elements commonly found in first-to-file regimes.
Constructive Use Explained
Under Section 7(c) of the Lanham Act, 15 U.S.C. § 1057(c), “the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration.”
However, this constructive use priority cannot be asserted against a party who, prior to the applicant’s filing date:
- Already used the mark in commerce;
- Filed a pending or registered application; or
- Filed a foreign application and timely submitted a U.S. application under 15 U.S.C. § 1126(d).
In short, if you file a trademark application in good faith, your filing date may establish priority—even if you haven’t used the mark in commerce yet—so long as no one else has used or registered it earlier.
Actual Use Still Required
Although constructive use establishes a priority date, actual use in commerce is still necessary to complete the registration process.
According to Section 1(b) of the Lanham Act, 15 U.S.C. § 1051, a person with a bona fide intention to use a trademark in commerce can file an application. But as outlined in Section 1(d), the applicant must, within six months of receiving a Notice of Allowance, submit a verified statement of actual use, along with specimens showing the mark in use and the applicable fees.
This requirement ensures that trademark rights are ultimately tied to real-world commercial activity, even if the Indonesia trademark registration process starts with an intent to use.
First-to-Use with Constructive Use vs First-to-File
Understanding how constructive use functions within a first-to-use system can be tricky. In a first-to-file country, the first party to register a mark usually has the superior rights, regardless of whether they’ve used it in commerce. In contrast, in first-to-use systems like the U.S., the first to actually use the mark holds priority—unless another party filed first under a bona fide intent to use and claims constructive use rights.
Let’s look at a simplified scenario:
- Alex files for a trademark for Brand X in January 2023.
- Brian begins using Brand X in commerce in August 2023.
- In a first-to-file jurisdiction: Alex wins, since he filed first.
- In a first-to-use system without constructive use: Brian wins, as he used it first.
- In the U.S. first-to-use system with constructive use: Alex wins, since his filing pre-dates Brian’s first use.
This demonstrates the powerful role of filing early in jurisdictions like the U.S., even though they are not strictly first-to-file countries.
Conclusion
When registering a trademark in a new jurisdiction, it’s crucial to understand the specific legal framework of that country. While many nations share similar trademark principles, such as protecting brand identity and preventing consumer confusion, the way they apply these principles can vary significantly. The United States, for example, follows a first-to-use system but also allows for constructive use, which can grant priority rights to applicants based on their filing date—even before actual use—under specific conditions.
This unique feature of the U.S. system demonstrates how filing early can be a powerful tool for securing rights, even in jurisdictions that don’t follow a strict first-to-file model. Therefore, staying informed and working with experienced professionals is essential when navigating global trademark laws.
At Am Badar & Am Badar, we specialize in helping businesses protect their intellectual property both locally and internationally. For personalized advice on intellectual property in Indonesia, don’t hesitate to reach out to us at ambadar@ambadar.co.id.
Sources:
- https://www.uspto.gov/trademarks/trademark-timelines/section-1b-timeline-application-based-intent-use
- https://www.marqvision.com/blog/trademarks-first-to-file-vs-first-to-use
- https://www.law.cornell.edu/uscode/text/15/1057
- https://www.law.cornell.edu/uscode/text/15/1051
Written and Reviewed by Nabil Argya
